Whose Rights Are They Anyway?

You’re a lawyer and motivational speaker who has become rather well known in your field, so you have decided to take your brand to the next level by registering a couple of domain names and filing a trademark application. 

Fast-forward five years, and you are now selling motivational books by the tens of thousands and have retired from private practice because you have too many book tours lined up. In the meantime, a jealous colleague (who will be working until he’s 85, as promised upon graduation) has kindly pointed out to you that at least two web sites have popped up using your coined trademark, both in domain names and as a brand name.  

Unfortunately, this is not at all uncommon — even if you aren’t a million-dollar-a-month business. These days, there are at least two types of country-code top-level and at least three types of generic top-level domains, which make it hard to keep track of proprietary rights, even for the most sophisticated companies.

Now, with the promise of domains being available in non-Latin based scripts, the task could well become nearly impossible. The result? I see a couple of things in the horizon. First, are trademark holders at risk of losing rights in the trademarks they do have because of non-enforcement? Second, are domain names and trademarks simply not going to be worth the trouble and expense of policing if, as a result of use by others, their value is diluted as well?

As an IP lawyer, I have probably just committed professional suicide by even suggesting this, but practically speaking, how can a company be expected to stay on top of enforcing its rights when to do so is so expensive, and the competing interest in making money and obligations of paying the bills and making payroll probably come first? 

So what if a registrant legitimately has a trademark for the same name registered in a foreign jurisdiction that is being used in a domain name on a legitimate web site that sells products or services to the public?

Take the Canadian company Booster Juice. It’s a brilliant and unique idea, right? I had seen exactly the same concept in Australia years before I had heard of it in Canada under the same name. Each company will probably argue that its concept came first, but does it really matter? If each only protected its trademark rights domestically, there isn’t an issue, right? Neither operates in the other’s country “of origin.” Now that both companies are becoming well known and have products being offered in locations around the world, does the same argument apply? Will it be simply a race to see who can register the trademarks and domain names in the jurisdictions in which they each get to first? This is not a new debate, and the legal challenge to keep up with a borderless online space is obvious.

Taking this one step further, what if each company registers its trademark in the language of each country it enters? Is it discrimination not to allow domain names to be registered in foreign languages? Internet users are certainly not all English-speaking, so why not increase access to the Internet, and by extension to your business, that much more? And what of protecting these domains as trademarks in foreign languages? Even if you can, what if the translation ends up being confusing with an existing trademark? 

So while the domain market continues to grow, is it fair to allow would-be registrants to register domain names in, say Russian, notwithstanding that in English the root of the domain is registered as a trademark as well as a domain name by a business? As it is, the more popular the words or expression, the more likely it is to be registered with hyphens or slight variations by other parties. 

In certain jurisdictions, and in particular in Canada, trademark rights holders are required under the Trade-marks Act to protect statutorily granted trademark rights, but in the face of so many new and existing ways to exploit trademarks on the Internet from any jurisdiction in the world, how can rights holders be expected to police every corner of the Internet and continually enforce misappropriation and misuse of their trademarks? Obviously, they can’t. Search houses can be retained to sweep and monitor the Internet for possible infringing activities, but after the search results have come in and the report has been paid for, many abandon all hope of enforcement because of the time and money required.

Adding to this growing challenge to protect and enforce proprietary rights are all manner of creative ways to make money from domains. On the list are, among other things:

•    Domain hijacking: Registration of a domain name that consists of a trademark or other well-known name